New Intellectual Property (Dispute Resolution) Bill In Singapore

On 8 July 2019, the Intellectual Property (Dispute Resolution) Bill (Bill) was tabled in Parliament, after a public consultation on the draft Bill that was conducted in March 2019 by the Singapore Ministry of Law.

The Bill aims to ensure that the Singapore Intellectual Property (IP) regime continues to support innovative activities in Singapore and positions Singapore as a choice of venue for international IP dispute resolution.

The three key features of the Bill are:

1. Streamline IP Dispute Resolution Framework in Singapore

a) Consolidate most IP proceedings in the High Court: At present, the High Court, State Courts and the Intellectual Property Office of Singapore (IPOS) have the jurisdiction to hear particular IP disputes. The Bill simplifies the process by having the High Court hear most of these disputes. The key changes to the IP dispute resolution framework are:

• Presently, the High Court only has exclusive jurisdiction over disputes relating to registrable IP rights. The amendment will give the High Court exclusive jurisdiction over all IP infringement matters, including non-registrable IP rights e.g. copyright and passing-off matters and regardless of the sum in dispute.
• The High Court will have the exclusive jurisdiction to make a declaration of non-infringement of patents. IPOS will no longer have this power.
• Presently, post-grant patent revocations are heard at IPOS. Under the amendment, the High Court will have concurrent jurisdiction with IPOS to hear applications for patent revocation, trade mark revocation, invalidation and rectification, registered design revocation and plant variety cancellation.

b) Introduction of “fast-track”: This address the higher costs of proceedings in the High Court. Truncated proceedings and caps on costs and damages will keep costs down and are intended to cater to lower value disputes or cost-sensitive litigants. More details will follow soon.

c) Certificates of contested validity available for other IP rights: Currently, certificates of contested validity are only available for patents. Under the amendment, both the High Court and IPOS can grant a certificate of contested validity for registered trade marks, registered designs and geographical indications. The effect of this is that if the validity of the registered IP right is subsequently challenged, and unsuccessful, the registered proprietor will be entitled to recover his costs from the other party on a solicitor-and-client basis.

2. Provide Certainty That IP Disputes Can Be Arbitrated in Singapore

The Bill provides certainty that IP disputes can be arbitrated in Singapore and the arbitral award only has effect on the parties and not the world at large. This means that if an arbitral tribunal makes a finding that a patent is invalid, a third party will not be able to rely on that finding to argue that he does not infringe the patent.

3. Amend IPOS’ Procedures on Granting and Re-examining Patents

a) Formalise third party observations on patent applications: When a patent application has been published, but a patent has not been granted, a third party may make submissions to the Registrar of Patents on the patentability of the invention. At present, this is an informal process. Formalisation of this process can help ensure the quality of granted patents.

b) Introduction of post-grant patent re-examination: The purpose of this was said to be to ensure that only deserving patents are granted and for such granted patents to be revoked in a cost-effective manner. This helps ensure that the patents in Singapore more robust.

To access the Bill, click here.

By Tan Xin Ya