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28 August 2020

From 17 August 2020 to 14 September 2020, the Intellectual Property Office of Singapore (“IPOS”) is conducting a public consultation on proposed changes to simplify and streamline intellectual property (“IP”) processes and to improve user experience with digital initiatives.

The consultation paper sets out the proposals in the following four main sections:

  • Simplifying and streamlining patents processes: Proposals include the introduction of a new process for the Registrar to invite the applicant to submit amendments (in lieu of issuing a written opinion) to address minor clarifications, within two months from the Registrar’s invitation. There are also proposed changes to the examination review process - where an applicant files amendments with the examination review request, the examiner will review the application based on the amended claims only (and need not review the earlier examination report, which requires separate and additional effort). Further, for all published Patent Cooperation Treaty (“PCT”) applications, it is proposed that applicants will need to request the publication of the English translation of the PCT applications at the same time as making the national phase entry in Singapore.
  • Simplifying and streamlining trade marks processes: IPOS is proposing a “partial refusal” mechanism for national applications to allow a partially refused application to still proceed to publication with the objectionable portion(s) stated in the Registrar’s first examination report removed, if no response is filed within the stipulated deadlines. This aligns with the mechanism in place for international registrations designating Singapore (or subsequent designations designating Singapore) filed via the Madrid Protocol. IPOS is also proposing restrictions on the number and/or types of series marks allowed in a series mark application. This is to achieve a more expeditious acceptance of marks and reduce the negative consequence of applications becoming treated as withdrawn due to a non-response to series mark objection(s).
  • Simplifying and streamlining common processes: In the area of trade marks, IPOS proposes to replace the current post-deadline relief measure of “reinstatement” in relation to trade mark applications which are treated as withdrawn with the “continued processing” measure (a measure currently adopted by the Geographical Indications Registry). For registered designs, IPOS is proposing to shorten the current period to reinstate, an application for the registration of design that is treated as withdrawn, from six months to two months, and to disallow requests to extend the two-month reinstatement period. In relation to patents, IPOS is recommending changes which take guidance from the case of Novartis (Singapore) Pte Ltd v Bristol-Myers Squibb Pharma Co [2017] SGHC 322 where the Singapore High Court provided legal interpretations for provisions under the Patents Act and Rules relating to correction of errors. Other proposed changes in this section include simplifying and aligning the processes across all IP (trade marks, registered designs and patents) in relation to the application for registration of IP transactions.
  • Improving user experience and service with digital initiatives: The proposals in this section relate to the use of artificial intelligence technologies in decision making. IPOS is preparing for a future when a fully computerised system can be used to assess IP applications independently.

Legislative changes

IPOS has indicated that consequential amendments may be made to the Patents Act and Rules, Trade Marks Act and Rules, Trade Marks (International Registration) Rules, Registered Designs Act and Rules, Registered Designs (International Registration) Rules, Plant Varieties Protection Act and Rules and Geographical Indications Act and Rules arising from the proposals.

Reference materials

The following materials can be found on the IPOS website http://www.ipos.gov.sg/: