Knowledge Highlights 19 November 2019
With effect from 21 November 2019, the Intellectual Property (Dispute Resolution) Act 2019 (“Act”) will, among others, amend the Arbitration Act and International Arbitration Act to clarify the arbitrability of intellectual property (“IP”) disputes in Singapore, providing certainty that IP disputes can be arbitrated in Singapore. There will be new provisions to clarify that an arbitral award has effect only on the parties to the arbitration (in personam) and not against the whole world (in rem).
Provisions not in force
The Act seeks to introduce changes to enhance the IP dispute resolution system in Singapore. However, the following key changes under the Act will not be in force yet:
- Consolidating most civil IP disputes in the Singapore High Court: The Act will simplify the process of IP dispute resolution by granting the Singapore High Court exclusive jurisdiction over infringements of all forms of IP, actions in passing off and declarations of non-infringement. Presently, IP disputes may be heard in the High Court, State Courts or Intellectual Property Office of Singapore (“IPOS”), depending on the nature of the IP right, the type of proceeding or the value of the claim.
- Formalising third party observations process for patent applications and introduce new post-grant patent re-examination process: To ensure that only deserving inventions are granted patent protection, the Act will formalise a process which allows third parties to provide additional information to IPOS to aid the patent search and examination process before a patent is granted. To ensure that only deserving inventions continue to enjoy patent protection, the Act will allow a person to request for a patent to be re-examined after grant, with accompanying reasons and documents. Presently, the only recourse to an opponent of a granted patent is to seek a revocation which is procedurally and substantially contentious.
The Intellectual Property (Dispute Resolution) Bill (“Bill”) was passed in Parliament on 5 August 2019 following two public consultations which the Ministry of Law (“MinLaw”) conducted in October 2018 and March 2019. In the Second Reading Speech on the Bill, Senior Minister of State for Law, Mr Edwin Tong, mentioned that MinLaw and the Supreme Court are looking into the introduction of a specialised track for litigation of IP disputes with simplified processes and cost saving features which will be set up in the High Court. As this is outside the scope of the Act, amendments will be done to civil procedure. The Minister also mentioned that more details about the time and cost-saving features of the “specialised track” will be shared in due course.
By way of background, in 2015, MinLaw appointed a committee to review and make recommendations on the IP dispute resolution system in Singapore (“IPDR Committee”). Separately, the Chief Justice established the Civil Justice Commission in 2015 and MinLaw established the Civil Justice Review Committee in 2016 to reform the civil justice system (collectively, “Civil Justice Reforms”). The proposed reforms are based on both the IPDR Committee’s recommendations and the broader Civil Justice Reforms’ recommendations.
Allen & Gledhill Partner and Head of Intellectual Property Practice Dr Stanley Lai, SC was a member of the IPDR Committee.