Legislative amendments bringing broad-ranging reform to the intellectual property (IP) regime in Singapore were tabled before lawmakers in early July 2019, following public consultations in July 2017 and August 2018.

At present, IP disputes are heard in multiple fora including the Intellectual Property Office of Singapore (IPOS), the Singapore State Courts, or the High Court depending on a multitude of factors. The Intellectual Property (Dispute Resolution) Bill aims to simplify this by granting the High Court exclusive jurisdiction for infringement of registered and non-registered IP rights, passing off, and declarations of non-infringement of patents.

New Formal Procedures in Patent Applications

Third-Party Observation Procedure

Third parties have been making informal submissions to the Registrar on the patentability of inventions in patent applications for some time. Under newly proposed Section 32 of the Patents Act, any person may, after the publication of a patent application, but before the issuance of the examination report, the search and examination report, or the supplementary examination report, make observations in writing to the Registrar on whether the invention in the said application is patentable.

Post-Grant Patent Re-Examination Process

The IP Bill proposes a new Section 38A of the Patents Act to provide for a process by which one may file an ex parte request for a post-grant re-examination of the specification of a patent. The patent will be revoked if the re-examination report shows that there is at least one unresolved objection for which the patent proprietor failed to give a satisfactory response.

Although the grounds for re-examination are similar to those found in Section 80(1) of the Patents Act (for revocation), the post-grant re-examination procedure allows an opportunity to challenge a patent through re-examination by an examiner, and can result in cost savings due to the ex parte nature of the procedure.

Arbitrability of IP Disputes

The IP Bill sets forth amendments to the Arbitration Act (Ch. 10) and the International Arbitration Act (Ch. 143A) to clarify that IP disputes can be arbitrated in Singapore.

The amendments further provide that the resulting arbitral award (and any judgment entered in terms thereof) binds only the parties to the arbitration and not third parties, such as third-party licensees and holders of security interests of the IP right in dispute.

The IP Bill heralds significant reform to the IP landscape in Singapore and lays the cornerstone for a cost-effective IP regime. Stakeholders are enabled with potent tools, such as post-grant patent re-examination, which is analogous to the ex parte re-examination procedure in the United States.

While the consolidation of IP disputes in the High Court may result in an increase of legal costs compared to IPOS proceedings, it is likely to be a precursor to future bills introducing low-cost, fast-track IP proceedings in the High Court.

This article was first published in INTA Bulletin, Vol. 74, No. 16.  For more information, please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.