รายงาน ALA และ CACJ 2019

(3) Past Courses Page

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Case name / ASEAN Judiciaries Portal Case Summary Template
citation: [SAMPLE]
Copy of
judgment / Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2017] SGCA 45
internet link
to judgment: Warnet-Lambert v
Subject Novartis [2017] SGCA 45.pdf
matter:
IP Rights Enforcement / Bankruptcy and Insolvency / Convergence and Harmonisation of
ASEAN Commercial Laws / Environmental Laws (please delete accordingly)

Date of Others (please state):
decision: 1 August 2017
Court:
Coram: Singapore Court of Appeal (“SGCA”)
Sundaresh Menon CJ, Chao Hick Tin JA, Andrew Phang Boon Leong JA,
Outcome: Judith Prakash JA and Tay Yong Kwang JA
(with Tay Yong Kwang JA delivering the judgment of the court)
Facts: The SGCA dismissed the appeal and disallowed the appellant’s application to amend its
patent on the grounds that: (a) there had been undue delay, (b) the patent had been granted
under the self-assessment system and was obviously invalid in its totality, and (c) the
amendments sought would extend the scope of the patent. The SGCA also observed that
section 14(7) of the Singapore Patents Act appeared to support the patenting of second and
subsequent uses of a known substance.
1 The appellant, Warner-Lambert Company LLC, owned a pharmaceutical patent
which claimed a monopoly over the use of a substance known as pregabalin for treatment
of pain (the “Patent”). In 2015, the respondent, Novartis (Singapore) Pte Ltd, applied to the
Health Sciences Authority for product licences in respect of pregabalin products. After
receiving notification of the respondent’s applications, the appellant commenced
proceedings against the respondent seeking, among other relief, a declaration that the Patent
would be infringed by the respondent if it did the acts for which the product licences were
sought.

2 Shortly after, the appellant informed the respondent of its intention to amend the
Patent. The respondent, in its defence and counterclaim, sought revocation of the Patent on
the ground that the Patent was invalid as it claimed a monopoly over methods of treatment
of the human or animal body, which was impermissible under section 16(2) of the Singapore
Patents Act (Cap 221, 2005 Rev Ed) (the “Patents Act”).

3 The appellant subsequently applied for leave to amend the Patent pursuant to
section 83(1) of the Patents Act. The amendments aimed to cure the invalidity of the Patent’s
granted claims (the “Granted Claims”) which clearly contradicted section 16(2) of the
Patents Act. The proposed amendments (the “Amended Claims”) pertained to a change from
method of treatment claims to Swiss-style claims in the following generalised form: “the
use of compound X in the manufacture of a medicament for specified (and new) therapeutic
use Y”.

Decision: 2

4 The Singapore High Court judge (the “SGHC Judge”) dismissed the appellant’s
application to amend the Patent on the basis that (a) the amendments would extend the scope
of the Patent, and (b) there had been undue delay by the appellant in seeking the
amendments. The appellant appealed against the decision of the SGHC Judge to the SGCA.
5 Post-grant amendments of patents, when parties were in the midst of court
proceedings, were governed by section 83 of the Patents Act. The SGCA considered it clear
from the language of section 83(1) that the power to allow an amendment of patent
specifications was discretionary. The factors to be considered in the exercise of this
discretion were:

(a) whether the patentee had disclosed all the relevant information with regard to the
amendments;

(b) whether the amendments were permitted in accordance with the statutory
requirements;

(c) whether the patentee delayed in seeking the amendments (and, if so, whether there
were reasonable grounds for such delay);

(d) whether the patentee had sought to obtain an unfair advantage from the patent; and
(e) whether the conduct of the patentee discouraged the amendment of the patent: at

[34] - [37].

6 On the facts, the SGCA considered that there had been undue delay by the appellant
in bringing the amendment application. The delay was for more than a decade and there was
no reasonable ground to excuse the long delay. The evidence showed that the appellant
knew or ought to have known that the Patent was problematic but chose not to take any
steps to find out more or to amend the Patent. Further, the appellant’s failure to amend was
not properly explained save for the bare assertion that it did not receive any legal advice
relating to the need to amend: at [40], [53], [54] and [56].

7 When a patent granted under the self-assessment system1 was obviously invalid in
its totality (as was the case with the Granted Claims), such invalidity would be fatal to an
amendment application. The patentee could not, by an amendment, subsequently obtain
patent protection when it did not even satisfy the patentability requirement to begin with.
As the Granted Claims, being method of treatment claims, were obviously invalid, the
amendments sought by the appellant were disallowed: at [62] and [65].

8 The amendments sought by the appellant would extend the scope of protection of
the Patent. The manufacture of the medicament for the purpose of treating pain, as stated in
the Amended Claims, was not an act that fell within the ambit of protection of the Granted
Claims. The Amended Claims protected the manufacture while the Granted Claims
protected the method of treatment. As manufacture was not within the original scope of
protection, there would clearly have been an extension of the scope of protection if the
amendments were allowed: at [74].

1 As it was in Singapore at the time the Patent was applied for in 1997. In this self-assessment system, the Intellectual
Property Office of Singapore (“IPOS”) did not conduct an independent search and examination to determine if the
invention was patentable. Instead, the burden was on the applicant to self-certify the patent’s compliance with the Patents
Act. On 14 February 2014, the self-assessment system was replaced by a “positive-grant” system, which was the system
applicable as at the time of this judgment. In the “positive-grant” system, IPOS would make a positive determination on
whether the patent application complied with the patentability requirements of the Patents Act: at [9]-[14]

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9 While not the main issue on appeal, the SGCA also took the chance to consider the
novel issue of whether a second medical use for a known substance was patentable in
Singapore. The SGCA observed that section 14(7) of the Patents Act appeared to support
the patenting of second and subsequent uses of a known substance. In its ordinary meaning,
section 14(7) of the Patents Act protected any use, first or subsequent, which was not part
of the state of the art: at [86] and [88].

10 If section 14(7) of the Patents Act covered second and subsequent medical uses of
known substances, then a purpose-limited product claim in the form of “Compound X for
use in the treatment of disease Y” might be sufficient to obtain a patent and Swiss-style
claims might not be necessary: at [89].

11 Swiss-style claims were allowed by IPOS. The SGCA did not see any reason to
disagree with the validity of Swiss-style claims at this stage, although they considered that
Swiss-style claims were a novel and perhaps questionable way of getting around what had
been perceived to be the meaning of section 14(7) of the Patents Act. The SGCA remarked
that if section 14(7) were to be given the meaning discussed, the need for Swiss-style claims
in Singapore would probably cease: at [90] and [96].

CONFIDENTIAL

CONCEPT NOTE FOR OBTAINING QUALITY AND CURRENT CONTENT ON
THE ASEAN JUDICIARIES PORTAL

Objective

1. This Concept Note sets out a proposal for the framework for seeking
contributions of quality and current content for the ASEAN Judiciaries Portal
(“AJP”), to be considered by ASEAN judiciaries.

The AJP

2. On 27 July 2018, the AJP was officially launched (accessible at https://cacj-
ajp.org). The AJP seeks to bring the ASEAN judiciaries to the world by providing
a portal through which the global community can appreciate, learn or know
more about the judiciaries and legal environments of the ASEAN member
states (“AMS”). The AJP is intended to assist persons seeking to conduct
business and trade in the ASEAN region to better understand the legal
environment in the ASEAN. To-date, all 10 AMS have provided text and
photographs for the landing pages of their individual country pages.

3. The provision of content has allowed the AJP to be officially launched with the
complete set of Introduction pages for all 10 AMS. Thus far, seven out of the
10 AMS have also provided detailed information on their judicial and legal
systems as the contents for their individual country pages. The remaining AMS
are working on providing detailed content on their respective judicial and legal
systems.

4. Since the official launch of the AJP, the AJP Singapore Working Committee
(“AJP WC”) has been formed. The AJP WC has worked to enhance the AJP’s
content and presentation of such content. Specifically, work is ongoing to
conduct website enhancements to present an online training marketplace and
case repository on the AJP. The AJP WC estimates that the enhancements to
create a training marketplace and case repository will be completed by mid-
November 2019.

5. With the completion of the enhancements, the AJP would become a better
online platform for the hosting of helpful content on the legal systems and
business environments of AMS, as well as relevant statutes and landmark case
law on the priority areas identified by the Council of ASEAN Chief Justices
(“CACJ”) at the 6th CACJ meeting, and these are:

a. Convergence and harmonisation of ASEAN commercial laws;
b. Intellectual property laws and enforcement;
c. Insolvency and bankruptcy laws; and
d. Environmental law.

6. Specifically, in relation to the online case repository, it was proposed at the 6th
CACJ meeting that each ASEAN judiciary will be responsible for the copyright
of the cases that will be uploaded and will provide a brief summary or
commentary to highlight the key points of each case. It was also proposed that

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CONFIDENTIAL

all cases and briefing notes must be provided in English with each ASEAN
judiciary being responsible for providing the English translation of all the
materials submitted. The 6th CACJ meeting eventually agreed that this proposal
was something that the CACJ encouraged all the jurisdictions to do but that it
was not an obligation.1 ASEAN judiciaries were nevertheless encouraged to
obtain the CACJ Secretariat’s assistance through Liaison officers to upload
weblinks to or the actual judgments in native language on the AJP, as doing so
will further the development of the AJP.

7. Accordingly, it is foreseeable that the upcoming work of the AJP Working Group
will be focussed on the obtaining and updating of content on the AJP.

Proposal and Considerations

8. Law firms engaged in work relating to the priority areas identified at [5] above
are a useful source of content for the AJP. The content which is sought to be
uploaded on the AJP is similar to that which many law firms already prepare for
client updates or other marketing purposes (eg, to be placed on professional
bulletins like the Singapore Law Watch). These include updates on latest
legislation, subsidiary legislation, amendments to laws, as well as case law and
commentaries. Such updates are made available by various law firms in the
English language.2

9. Collaboration with law firms to provide content on the AJP will have the
following practical benefits:

a. Minimising resource expenditure on the part of ASEAN judiciaries to
conduct research, prepare content and translate content;

b. Minimising resource expenditure on regular updating of all content on
the AJP;

c. Ensuring that the AJP is a well-populated repository of quality and
updated information which attracts viewership and increases website
traffic which translates to generation of interest in other CACJ activities
eg training and capacity building; and

d. Allowing the AJP to be publicised to a wider audience (for example, law
firm’s commentaries or updates can include a link to the AJP), which
goes towards creation of value that can be tapped upon to monetise the
AJP and achieve a measure of self-funding in the future.

10. For the collaboration between the ASEAN judiciaries with law firms to be
effective and practicable, the mode of collaboration must address two important
considerations:

1 6th CACJ Meeting minutes at paragraph 10.9.
2 Eg, Rajah and Tann Asia LLP’s legal updates site accessible at
https://www.rajahtannasia.com/eoasis/legal-updates

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a. The need for ASEAN judiciaries as a whole, in collaborating with law
firms, to avoid the impression of partiality towards one or more law firms
or individuals. ASEAN judiciaries are understandably concerned to avoid
the impression of endorsing any particular individual’s or firm’s opinion
about the law, particularly on legal issues which have yet to be settled
by any definitive judicial pronouncements. The proposal mitigates this
risk so as not to compromise on the judiciary’s neutrality and the public’s
confidence in the administration of justice.

b. Law firms’ interests must be considered. Incentivising law firms to
continuously update and share current and quality content with the AJP
Working Group is essential to the success of the collaboration. The
proposal recognises that law firms may be inclined to collaborate if law
firms can develop awareness of their practices through the AJP.

11. The proposal is as follows:

a. Each ASEAN judiciary may identify a number of law firms, preferably by
selecting law firms of a certain minimum size, by consulting bar and/or
solicitors’ associations/societies in the jurisdiction.

b. Each ASEAN judiciary shall communicate with identified law firms,
requesting for volunteers to collaborate with the ASEAN judiciary by
regularly provide the Liaison Officer with summaries or commentaries on
legislation and case law on the four priority areas of the CACJ (see [5]
above). In the communication of the proposal, it should be made clear
that the content received from contributing law firms will be attributed, so
as to provide law firms with the incentive to contribute quality material
which is current and relevant.

c. Interested law firms may be selected by ASEAN judiciaries to be placed
on a panel. Panel law firms will be engaged by ASEAN judiciaries to
contribute content on AJP on a rotational basis.

d. Rotation may be conducted on a yearly basis, with one panel law firm to
be selected for one of the four priority areas in that jurisdiction, eg
insolvency and bankruptcy law in Malaysia, or intellectual property law
and enforcement in Vietnam. This entails that each ASEAN judiciary will
select a total of four law firms per year, which will provide and update the
ASEAN judiciary’s content on the AJP.

e. The content should be provided by selected panel law firms on a regular
basis to the Liaison Officer of the ASEAN judiciary. Each ASEAN
judiciary shall be responsible for forwarding content from selected panel
law firms. Liaison Officers are to forward all material provided by panel
law firms, ie, the write-ups and case summaries received (along with the
source documents - statutes and cases in native language and/or
English language) to the AJP WC for the purposes of uploading to the
AJP.

f. At all times, each ASEAN judiciary shall retain full control over the
contents of what is to be uploaded on to the AJP.

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g. Liaison Officers shall inform the AJP WC about the attribution which is
to be given to the contributor of the write-ups (eg, name, law firm,
practice area). The AJP will contain a clear disclaimer that all information
and opinions expressed originated from the contributor, and do not form
the view of any of the ASEAN judiciaries and/or the CACJ.

h. Panel law firms can be requested to include links to the AJP in their client
updates/publicity material, if the material which is being uploaded on the
AJP is also to be shared with their clients or used for marketing
purposes.

Proposed safeguards

12. The safeguards for the effective operationalising of the proposal, are openness
to consider collaborations with all law firms who meet the selection criteria
(size), and proper attribution of contributions. It will be clearly communicated on
the AJP that the uploading of content provided by selected panel law firms is in
no way an endorsement by any ASEAN judiciary and/or the CACJ of any
opinions expressed by the writers.

13. In implementing the proposal, the AJP WC can support the various ASEAN
judiciaries by providing the AJP Working Group representative/Liaison Officer
from each ASEAN judiciary with a draft working proposal, which they may wish
to consider sending to selected law firms to initiate collaboration.

14. In addition, and pursuant to Declaration 3 of the 6th CACJ meeting3, the ASEAN
judiciaries may also reach out to the CACJ Secretariat for assistance in
populating the content on their respective case repository pages.

Other alternatives

15. AMS judiciaries may consider adopting the proposal to collaborate with
international rather than local law firms, if the concern is to avoid conveying the
impression of partiality towards any law firm that regularly conducts litigation
before the judiciary.

16. Alternatively, AMS judiciaries may consider obtaining high quality content at
minimal cost by collaborating with: (a) legal and judicial research institutions
that are affiliated with the state (eg, part of the judiciary, state universities, etc);
(b) academics and researchers; or (c) the ASEAN Law Association National
Committee. AMS judiciaries which are resourced to do so may also prepare
content utilising judiciary resources. For example, one AMS considered
populating its country page with comparative legal studies articles prepared by
legal officers who are required to prepare such pieces upon return from
overseas studies on government scholarships. This allows the judiciary to
leverage existing resources.

3 Declaration 3 states as follows: “THE AGREEMENT to give the mandate to the CACJ Secretariat to
continue to assist the ASEAN Judiciaries for the provision and uploading of content for the AJP.”

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CONFIDENTIAL

Conclusion

17. The proposal is expected to generate quality and current content for the AJP,
which will go towards increasing the interest level in the AJP and website traffic.
This may translate to increased website traffic, which will be helpful in efforts to
secure funding to maintain or further enhance the AJP in the future.

Drafted by: Chee Min Ping and Lau Qiuyu (AJP Working Committee)
Date: 3 October 2019
Approved by: AJP Working Group

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ASEAN Judiciaries Portal Project

ASEAN Judiciaries Portal
Funding Utilisation Report
For the Period 1 Mar 2017 – 15 Oct 2019

1. Project Highlights

1.1 The Norwegian Ministry of Foreign Affairs (MFA) and the Singapore Academy of Law (SAL) entered into
a Grant Agreement on 18 April 2017 for the development and support of the ASEAN Judiciaries Portal
(AJP).

1.2 Under the agreement, the MFA committed to provide financial support for the AJP project from March 2017
to July 2020. The grant amount was capped at NOK 3,600,000 and was to be disbursed in multiple
tranches upon request by the SAL based on project needs.

1.3 A tender for the development and maintenance of the AJP was subsequently called in April 2017 for which
3 proposals were received. The scope of the contract covers development of the AJP, 3 months of
performance appraisal period followed by 3 months of warranty period, and 2 years of system hosting,
maintenance and support thereafter.

1.4 The project was awarded to AsiaPac Distribution Pte Ltd on 2 Jun 2017 for SGD 415,767 (SGD 229,515
for development and SGD 186,252 for hosting, maintenance and support) after careful evaluation and
negotiation.

1.5 During the development of the AJP, additional capabilities had been built in, as a result of which the AJP
had both a public section and a members-only section by the time it was launched. The members-only
section served to facilitate collaboration amongst members of the CACJ.

1.6 The AJP project was kicked started in July 2017 and the portals were officially launched on 27 July 2018
as planned.

1.7 The maintenance phase of the AJP and intranet portals started on 27 January 2019.

2. Funds Receipts and Utilisation

2.1 The SAL had as at to-date received three tranches of the approved funds from MFA amounting to a total
of NOK 2,100,000, circa SGD 345,966.41. Out of the amount received, SGD 276,199.90 had been utilised
to-date. Please refer to Annex A for details of funds receipts and utilisation.

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ASEAN Judiciaries Portal Project

2.2 During the system development phase, payments to AsiaPac Distribution Pte Ltd were made in
accordance to portals development milestones stipulated in the contract as follows:

Stage (Development) % of System Cumulative

Contract Price Total

(development only)

(i) Thirty (30) days from the date of Letter of 5 5%

Acceptance

(ii) Thirty (30) days from the completion of 25 30%

User Acceptance Testing

(iii) Thirty (30) days from the date of 30 60%

Commissioning

(iv) Thirty (30) days from Documentations 10 70%

Sign-Off

(v) Thirty (30) days from completion of 20 90%

Performance Guarantee Period

(vi) Thirty (30) days from expiry of System 10 100%

Warranty Period

To-date, SAL has paid for 90% of the development costs, the last 10% will be paid upon completion of all
project documentation.

2.3 Payments for the hosting, maintenance and support of the portals are made quarterly in arrears. Payment
for the first and second quarters of the maintenance phase which started in Jan 2019 had been made.

2.4 There were other ancillary costs such as audit-related costs and security assessment costs which were
incurred since March 2017.

2.5 Two annual audits were conducted by external auditors approved by the MFA for FY 2017 and FY 2018.
These were included in the budget submitted to the MFA for approval prior to the signing of the agreement
between MFA and SAL.

2.6 The system security assessment was recommended by the SAL to minimise cyber security risks even-
though it was not included in the budget approved by the MFA. This was conducted by a third-party vendor
engaged by the SAL.

Prepared by : Chua Mui Yee
Foo Nian Chou
Reviewed by : District Judge Darryl Soh
The Council of ASEAN Chief Justices
Approved by : 15 October 2019

Submitted to :

Date of Submission :

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Annex A2 – Funds Receipts

ASEAN Judiciaries Portal Project

ASEAN JUDICIARIES PORTAL
FUNDS RECEIPTS AND UTILISATION
FROM 22 MARCH 2017 TO 15 OCTOBER 2019

Funds Funds Balance Remarks
Receipts Utilisation SGD
Date SGD
NOK SGD

29/3/2017 600,000.00 98,405.20 30.00 98,375.20 First tranche of funds received
17/5/2017 500,000.00 83,296.67 9,419.25 88,985.95
172,282.62 Domain name cacj-ajp.org was
23/8/2017 4,990.05 167,262.57 registered
42,251.63 125,010.94 Payment milestone 1 – 5% upon
9/11/2017 signing of Letter of Acceptance
8/3/2018 112,170.94 Second tranche of funds
27/4/2018 111,975.09
112,005.09 Annual financial audit
7/4/2018 1,000,000.00 164,264.54 12,840.00
21/6/2018 30.00 25,906.96 Payment milestone 2 – 25% upon
25/7/2018 190,171.50 completion of User Acceptance
7/11/2018 165.85 144,268.50 Testing
9/11/2018 86,068.13 Ancillary payment - third party
22/11/2018 139,309.05 vendor Security Testing
45,903.00 116,357.55 Domain name cacj-ajp.org
116,329.51 registration renewal
4/3/2019 4,959.45 Refreshment for AMS reps
8/3/2019 22,951.50 93,048.01 training
69,766.51 Payment milestone 3 – 30% upon
25/4/2019 28.04 69,766.51 System Commissioning
23,281.50 Third tranche of funds
8/7/2019 23,281.50
276,199.90 Payment milestone 5 – 20% upon
10/10/2019 completion of Performance
Guarantee Period
Total grant Ancillary payment - audit fees
received and
utilised Payment milestone 6 – upon end
Remaining of Warranty Period
grant amount Domain name cacj-ajp.org
registration renewal
Payment for maintenance support
for 27 Jan 2019 – 26 Apr 2019
Payment for maintenance support
for 27 Apr 2019 – 26 Jul 2019

2,100,000.00 345,966.41
1,500,000.00
227,572.50 (please note that the SGD
equivalent is an estimate based
on conversion rate on 7/10/2019)

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SESSION 3

WORKING GROUP BRIEF REPORT ON FACILITATING SERVICE OF
CIVIL PROCESSES WITHIN ASEAN
TABLE OF CONTENTS

A. REPORT........................................................................................2
B. SUMMARY OF ANALYSIS ...........................................................4

(I) The Procedure for The Taking of Evidence For Foreign
Proceedings...................................................................................4
(II) Procedure for Service of Subpoenas out of Jurisdiction .........6
(III) The Procedure for the Enforcement of Foreign Judgments .7
C. RECOMMENDATIONS AND THE WAY FORWARD ....................8
ANNEX .................................................................................................11

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A. REPORT

1. Malaysia has been tasked to lead the Working Group on Facilitating
Service of Civil Processes within ASEAN (“Working Group”) for the
purposes of sharing best practices to facilitating the service of civil
processes in ASEAN.

2. During the 6th Meeting of the Council of ASEAN Chief Justices
(“CACJ”) in Singapore on 27 July 2018, the Working Group was tasked in
accordance with Paragraph 7 of the Singapore Declaration to identify new
areas in civil proceedings (for example; the taking of evidence for foreign
proceedings and assisting in the service of subpoenas within ASEAN) to
submit a brief report on the viability of undertaking further work in any such
area in the upcoming 2019 CACJ meeting.1

3. Accordingly, Malaysia requested all ASEAN member-States to
submit a brief report on the relevant laws and procedures in their
respective jurisdictions with regard to:

a. The procedure for taking evidence for foreign proceedings;
b. The procedure for service of subpoenas out of jurisdiction; and
c. The procedure for enforcement of foreign judgments.

1 Paragraph 7 of the Singapore Declaration at the 6th Council of ASEAN Chief Justices (CACJ) Meeting provides:
“7. THE AGREEMENT for the Working Group on Facilitating Service of Civil Processes within
ASEAN to identify new areas in civil proceedings (for example, taking of evidence for foreign
proceedings and assisting in the service of subpoenas within ASEAN) to work on, and for it
submit a short report on the viability of undertaking further work in any such area.”

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4. As such, the Working Group studied the feasibility of proposing a
standard and uniform method of service of civil processes among ASEAN
member states either by way of treaty or a model rule in the respective
rules of court of the ASEAN member-States. The study culminated in this
Report which seeks to ascertain, collate and summarise the legal position
in respect of the civil processes in ASEAN on matters (a) to (c) above.

5. The following ASEAN jurisdictions submitted their reports on the
laws and procedures with respect to the above stated procedures:

i. Brunei
ii. Indonesia
iii. Malaysia
iv. Myanmar
v. Singapore
vi. Thailand
vii. Vietnam

6. A comparative summary of the positions of the law in the above
ASEAN jurisdictions, is laid out in the Table in the Annex. It should be
noted that the law in Brunei and in Malaysia is word for word the same.

7. Based on the reports submitted to us by each of the ASEAN
nations, we have endeavoured to analyse the same with the purpose to
seek uniformity in laws and procedures.

8. We then arrived at the conclusion that a detailed study is necessary
and accordingly propose recommendations to that effect.

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B. SUMMARY OF ANALYSIS

(I) The Procedure for The Taking of Evidence For Foreign
Proceedings

9. The procedure for taking evidence for foreign countries in ASEAN
differs from one member-State to another.

10. As noted earlier, the procedure relating to the taking evidence for
foreign countries in Malaysia, Brunei, Myanmar, and Singapore is
substantially the same. The written law in Malaysia and Brunei is word for
word the same. The procedure for taking of evidence in foreign
proceedings is regulated under Order 66 of the Rules of Court (ROC). The
decided cases in respect of the then Malaysian Order 66 of the Rules of
High Court have ruled that the particular provision can also be invoked in
criminal matters in obtaining of evidence for the purposes of foreign
criminal proceedings.

11. Myanmar law is worded differently but appears to be procedurally
similar to that of Brunei and Malaysia. As for Singapore, the major
discernible difference is that its procedure for the taking of evidence for
foreign proceedings is regulated by statute and by way of subsidiary
legislation (Rules of Court). Just like Malaysia and Brunei, Order 66 of the
Singapore Rules of Court (Cap. 322, 2014 Rev. Ed) also provides for
taking of evidence for foreign proceedings. In addition to this, The
Evidence (Civil Proceedings in Other Jurisdictions) Act (Cap. 98, 2013
Rev. Ed) (E(CPOJ) Act sets out the substantive legal framework for the
Singapore Court to render assistance to a foreign court by making an
order for the taking of evidence within the jurisdiction for the purposes of

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civil proceedings in other jurisdiction. More importantly, the E(CPOJ) Act
gives effect to the Hague Convention on the Taking of Evidence Abroad
in Civil or Commercial Matters of 1968 (Hague Convention on Evidence).

12. In Thailand and Vietnam however, heavy reliance is placed on
international agreements and general principles of international law.
When it comes to countries not party to any international agreements with
Thailand or Vietnam, the request for taking of evidence is to be made
through diplomatic channels.

13. In Thailand, for example, when the Thai Ministry of Foreign Affairs
receives a request from the embassy or consulate of the requesting
country in Thailand, such request will be forwarded to the Office of the
Judiciary.

14. In Indonesia, the procedure for taking evidence for foreign
proceedings is regulated under a Memorandum of Understanding (“MoU”)
between the Supreme Court of the Republic of Indonesia and the Ministry
of Foreign Affairs of the Republic of Indonesia.

15. In summary, what can be discerned from the reports tendered by
the ASEAN Member States is that the court will give effect to letters of
request issued by a foreign state as far as possible and it would not be
astute to examine the issues in the action and the circumstances of the
case with excessive particularity for the purpose of determining the
question of relevance and admissibility in advance. However, it retains the
power to curtail parts of the foreign request in appropriate circumstances.

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(II) Procedure for Service of Subpoenas out of Jurisdiction

16. In Brunei, Malaysia and Singapore, the procedure is substantially
similar. The law of all three jurisdictions does not permit the service of
subpoena outside the jurisdiction. Instead, the requesting party shall
make the request to a Registrar and the Registrar shall endorse the Letter
of Request, together with certificates for the appointment of an examiner
who would examine the witness outside jurisdiction when subpoenaed.
These processes are subjected to the locus of the countries being party
to the Civil Procedure Convention. This is essentially the same as
initiating a request for the taking of foreign evidence for the purposes of
foreign proceedings. In Indonesia, the procedure is set out in Article 5 of
the MoU between the Judiciary and the Ministry of Home Affairs to
regulate the process.

17. In Vietnam, Thailand and Myanmar it appears their laws allow for
the service of subpoena outside the jurisdiction. For example, Myanmar
may directly serve the subpoena to the Union of India and Pakistan as it
is expressly provided for in its Civil Procedure Code. Thailand and
Vietnam, on the other hand, rely heavily on international treaty obligations,
to which they are party to. If there is no obligation, the processes shall be
regulated by diplomatic channels.

18. A study into the Vietnamese, Thai or Burmese models would prove
fruitful for working out best practices/model rules/method for permitting
the service of subpoena outside the jurisdiction which at present, in
ASEAN countries like Malaysia, Brunei and Singapore seems amenable
only through a formal request for the taking of evidence to the receiving-
State.

6

(III) The Procedure for the Enforcement of Foreign
Judgments

19. The procedure for enforcement of foreign judgements is very
similar to the procedure for the taking evidence of evidence for foreign
proceedings and the procedure for service of subpoenas out of
jurisdiction.

20. This is because all the three procedures involve territorial
jurisdiction, and the sovereignty of countries. The net result is that laws
relating to the enforcement of foreign judgments are strongly contingent
upon legislation and governmental or executive policy.

21. This is borne out by the fact that specific statutes for the registration
and enforcement of foreign judgments are typically put in place. For
example, in Malaysia, the local legislation, the Reciprocal and
Enforcement of Judgment Act 1958, stipulates that a foreign judgment
may be enforced as a local judgment upon registration in the High Court,
provided that the element of reciprocity between both jurisdictions exists.
Among the ASEAN countries, Singapore and Brunei do affirmatively share
this reciprocity with Malaysia, hence if there is a foreign judgment from
Singapore or Brunei, this Act allows for such foreign judgment to be
enforced in Malaysia by way of registration, as if it was a local judgment.2

2 Taking into account another requirement that must be fulfilled which is that the foreign judgment must be a
final judgment for a fixed sum of money.

7

C. RECOMMENDATIONS AND THE WAY FORWARD

22. Based on the foregoing, we propose the following
recommendations:

a) It is proposed that the Working Group on Facilitating Service of
Civil Processes within ASEAN to work on developing a model rule
in the area of taking Evidence For Foreign Proceedings. This is
pertinent towards harmonising cross border commercial laws within
ASEAN and creating a conducive legal framework for cross-border
commercial litigation within ASEAN. It is prescribed that this area is
prioritized over the rest, considering the worthwhile benefits it will
harness throughout the ASEAN Region to aid cross border litigation.
It is irrefutable that beyond matters of substantive law, cross-border
litigation gives rise to possible challenges that do not advance to the
same length in domestic disputes. Relatively straightforward
procedures can become complicated where they span borders, and
it is noteworthy to identify of these additional hurdles and how best
to navigate them. A critical feature of cross-border litigation, with
increasing occurrence in the ASEAN region, is the obtaining of
evidence in a jurisdiction foreign to the forum of proceedings. Thus,
it is recommended that the Working Group on Facilitating Service of
Civil Processes within ASEAN to study, consider or model a rule
based on the reports and feedback received from the ASEAN
member states. The Working Group ought to recommend that the
said Model Rules be adopted by each Member States, under their
respective laws and juridical processes.

8

b) To consider publishing in the ASEAN Judiciaries Portal the
Model Rule on Service which was sanctioned and commended for
adoption in the last CACJ Meeting in Singapore to facilitate the
public to access the same and to learn about the practices in other
jurisdictions concerning the Model Rule on Service. It is well
proposed that the ASEAN Member States establish a general
protocol for reporting how the Model Rule on Service is adopted and
implemented within the ASEAN Member States. It is likewise
proposed that an initiative to collate and report relevant information
on each ASEAN Member States’ adoption of the Model Rule on
Service including their respective enabling domestic legislation, on
a members-only section of the ASEAN Judiciaries Portal for mutual
reference. 3

c) In order to assist the work of the Working Group, to consider
Singapore’s proposal for CACJ to collaborate with the HCCH
Permanent Bureau to conduct a Masterclass on the three relevant
Hague Conventions on Service, Evidence and Choice of Court
Agreements so as to build capacity, develop and harmonise the
commercial legal framework of the ASEAN Member States.4

d) Identifying worthwhile areas of civil process for the further
development of the Draft Model Rules. At the 6th CACJ meeting,
only two areas of civil proceedings were identified to be explored by
the Working Group, namely the taking of evidence for foreign

3 Recommendation submitted by Singapore in the Brief Report provided for the Working Group
on Facilitating Service of Civil Processes within ASEAN.
4 Ibid (refer Annex for the Concept Note on the Hague Conference on Private International
Law (HCCH) Masterclass)

9

proceedings and assisting in the service of subpoenas within
ASEAN. Besides the two areas identified, a third worthwhile area
of consideration is the mutual recognition and enforcement of
foreign judgments within ASEAN. The globalisation of business has
culminated in a dramatic upsurge in the volume of litigated disputes
where the parties are based in different jurisdictions or there is
present some other international aspect (such as the location of
evidence or assets). Such disputes raise particular legal issues,
many of which fall within what we traditionally known as ‘private
international law’ - such as jurisdiction, choice of law and
enforcement of foreign judgments. Those areas of law are
progressing to evolve space, both within the national legal systems
and through multi-jurisdictional arrangements. For commercial
parties dealing internationally, an awareness of advancements in
those areas of the law is important as a key part of dispute risk
management - not only when a dispute arises but also at the deal-
making and contract drafting stages.

10



ANNEX

11

ASEAN NAT

Brunei & Malaysia Indonesia Myanmar jur
jurisdiction in relation to and the nature of the ord
a matter pending before dispute. to a foreign Court E(
a Court or tribunal in a attention to the above
foreign country be 4. The Diplomatic powers of the a. A
obtained/ received by representative of the commissioner should b
the Registrar, the requesting State be drawn by means of S
Registrar shall send the transmits the rogatory a note attached to the f
document to the letter and all related letter issuing the e
Attorney General and documents to the commission.6 o
the Attorney General Indonesian Ministry of S
may apply for an order Foreign Affairs.
and take such other b. T
steps necessary to give 5. The Indonesian m
effect to the request; Ministry of Foreign r
Affairs then forwards the o
Any order made under rogatory letter to the t
this Order for the Supreme Court of the j
examination of a Republic of Indonesia. f
witness may order the The Supreme Court will
examination to be taken then acknowledge c. T
before any fit and receipt and will thereafter t
proper person assign the authorized t
nominated by the court to follow up the p
person applying for the rogatory letter. h
order or before the i
8. The Supreme Court of c
the Republic of

6 Para 291 of the Courts Manual.
9 Section 3, E(CPOJ) Act, O 66 r 2 and 3 of the ROC.
10 Section 3(a), E(CPOJ) Act.

3

TIONS

Singapore Thailand Vietnam
risdiction to make an Justice of is the Central
der under the The Office of the Authority which will
(CPOJ) Act: Judiciary is the Central undertake to receive
Authority of Thailand Letters of Request
An application must responsible for judicial coming from a judicial
be made to the assistance in civil and authority of another State
Singapore High Court commercial matters. For and to transmit them to
for an order for a non-agreement the authority competent
evidence to be country, the request for to execute them. If the
obtained in taking of evidence shall Letters of Request shall
Singapore9; be made through be received via
diplomatic channels. diplomatic channels, the
The application is Ministry of Foreign
made pursuant to a Affairs of Viet Nam shall
request issued by or forward it to the Ministry
on behalf of a court or of Justice of Viet Nam.
tribunal exercising
jurisdiction in a The Ministry of Justice of
foreign country10; and Viet Nam also is the
Central Authority to
The evidence sought forward the documents
to be obtained is for establishing the
the purposes of civil execution of the Letter of
proceedings which Request to the
have either been requesting State.
instituted or are
contemplated before

3

The Procedure for The Taking of E

ASEAN NAT

Brunei & Malaysia Indonesia Myanmar Th
This procedure is The procedure is Governed mostly by fou
regulated mostly by mostly regulated by the the Burmese Code of so
Order 66 respectively Memorandum of Civil Procedure.
of the Bruneian Understanding (MoU)
Rules of the between the Supreme The Court may subject a. E
High Court 1990 and Court of the Republic
the Malaysian Rules of Indonesia and the to such conditions and P
of Court 2012 Ministry of Foreign
Affairs of the Republic limitations issue a O
A Registrar may of Indonesia No.
(except in criminal PRJ/HI/102/02/2018/01 commission, among A
matters), exercise the and
power of the High Court No.01/NK/MA/2/2018. other things, to R
or a Judge thereof to examine any person.1 – A
make, in relation to a Such procedure is known
matter pending before a as rogatory letter or letter b. O
court or tribunal in a of request or rogatory
place outside the commission. The MoU In the case of taking C
jurisdiction, orders for defines a letter rogatory
the examination of as a formal letter from a evidence from anyone 2
witness and for foreign court to an who is out of the E
attendance and for Indonesian court and
production of vice versa, requesting jurisdiction of Myanmar,
documents and to give assistance in civil
directions. matters. the Court may, in lieu of Th

issuing a commission, ou

issue a letter of request leg

to examine a witness Sin

residing at any place ren

not within the Union of for

Myanmar.2 an

of

Likewise, subject to jur

such conditions and pu

limitations as may be pro

1 Section 75 of the Code of Civil Procedure.
2 Section 77 of the Code of Civil Procedure.

1

Evidence for Foreign Proceedings

TIONS

Singapore Thailand Vietnam
he legal framework is The Court of Justice has The judicial authority of a
und in the following provided judicial State (the requesting
ources: assistance for service of State) shall, in
process and taking of accordance with the
Evidence (Civil evidence in civil and provisions of the treaty
Proceedings in commercial matters on mutual legal
Other Jurisdictions) requested by courts of assistance in civil
Act (Cap. 98, 2013 foreign countries. matters between that
Rev. Ed.) (“E(CPOJ) State and Vietnam,
Act”); and The Civil Procedure request the competent
Order 66, Rules of Code, Section 34, authority of Vietnam, by
Court (Cap. 322, paragraph one, means of a Letter of
2014 Rev. stipulates that where any Request, to obtain
Ed.)(“ROC”). proceeding is to be evidence for use in civil
carried out wholly or or commercial
he E(CPOJ) Act sets partly through the proceedings.
ut the substantive medium of or by request
gal framework for the to the authority in any In case there is no treaty
ngapore Court to foreign country, the court mentioned above with
nder assistance to a shall, in the absence of the requesting State, the
reign court by making any international Letter of Request may be
n order for the taking agreement or provision executed by the
of law governing the competent authority of
evidence within the matter, comply with the Vietnam under the
risdiction for the general principles of principle of reciprocity.
urposes of civil international law.
oceedings in other

1

ASEAN NAT

Brunei & Malaysia Indonesia Myanmar jur
Article 6 of the MoU prescribed, the eff
Generally, an order for regulates the procedure provisions as to the Co
the examination of as follows (as execution and return of Ta
witness, and for summarised): commissions for the Ab
attendance, and for examination of Co
production of 1. A rogatory letter from witnesses shall apply to 19
documents, and to give foreign jurisdictions must commissions issued by RO
directions, shall be be transmitted to the or at the instance of pro
made ex parte by an Supreme Court of the courts of any foreign co
authorized person of Republic of Indonesia country.3 ap
the requesting court and submitted through a E(
and shall be supported diplomatic representative According to the Courts
by affidavit; of the State where the Manual4 in Myanmar, a Th
requesting court sits commissioner is ap
An application may also which is situated in appointed under the pro
be made application by Indonesia or whose seat Code of Civil Procedure pro
the Attorney General in covers Indonesia. to take evidence has all of
certain cases. the powers under or
Essentially, where a 2. The rogatory letter Chapter X of the me
letter of request, must include all the Evidence Act (process
certificate or other necessary particulars, for of the examination of Ge
document requesting example, the identity of witnesses5) to control thr
that the evidence of a the witness from whom the examination of be
witness within the the evidence is sought witnesses. When such Co
a commission is issued

3 Section 77(a) of the Code of Civil Procedure.
4 The Courts Manual (Vol I) (4th Edition).
5 Section 135 to Section 160 include in the Chapter X of the Evidence Act.
7 Singapore is a party to the Hague Convention on Evidence.
8 Section 2, E(CPOJ) Act.

2

TIONS

Singapore Thailand Vietnam
risdictions. It gives According to Vietnamese
fect to the Hague With regard to the taking law, including the
onvention on the of evidence in civil and international treaties on
aking of Evidence commercial matters mutual legal assistance
broad in Civil or requested from foreign in civil matters to which
ommercial Matters of authorities, the Court of Vietnam is a party, the
968.7 Order 66 of the Justice has adopted the judicial authority of a
OC sets out the key principles laid down State may request the
ocedure for in the Hague Convention competent authority of
ommencing on the Taking of Vietnam to obtain
pplications under the Evidence Aboard in Civil evidence for use in
(CPOJ) Act. or Commercial Matters, judicial proceedings.
even though Thailand is
he E(CPOJ) Act not a contracting state to Where appropriate, the
pplies to civil the Hague Evidence Letter of Request shall
oceedings but not to Convention. Moreover, contain the following
oceedings arising out five bilateral agreements information:
on judicial assistance in
any fiscal, monetary civil and commercial According to Vietnamese
revenue law or matters in which law, including the
easure.8 Thailand has concluded international treaties on
clearly show the mutual legal assistance
enerally, there are influence of the Hague in civil matters to which
ree requirements Evidence Convention in Vietnam is a party, the
efore the Singapore this matter. Vietnamese Ministry of
ourt exercises its

2

ASEAN NAT

Brunei & Malaysia Indonesia Myanmar
Registrar or before
such other qualified Indonesia will report the t
person as the Court implementation of the c
seems fit; rogatory letter to the
Ministry of Foreign If t
The examiner before Affairs of the Republic of me
whom the evidence Indonesia in a form of a Hig
was taken shall send transcript of proceedings po
the deposition of that which will then convey ap
witness to the Registrar this report to the giv
and the Registrar shall, diplomatic representative req
among others, certify of the diplomatic ev
with the seal of the representative of the ap
High Court for use out State where the the
of the jurisdiction requesting court sits. ap
identifying the tha
documents annexed
thereto i.e. the original Su
documents requesting dir
that such evidence be by
taken in accordance ex
with the request. tak
pro
to
of
fea
wit
su

11 Section 3(b), E(CPOJ) Act.
12 Section 4(1), E(CPOJ) Act.
13 O 66 r 4(2), ROC.

4