Intellectual Property (Amendment) Bill passed to amend various IP Acts to improve (1) business-friendliness, (2) operational efficiency of IPOS, and (3) legislative and procedural clarity
On 12 January 2022, the Intellectual Property (Amendment) Bill (“Bill”) was read the second time and passed in Parliament. Tabled in Parliament for first reading on 1 November 2021, the Bill seeks to amend the Geographical Indications Act 2014, the Patents Act 1994, the Plant Varieties Protection Act 2004, the Registered Designs Act 2000 and the Trade Marks Act 1998 mainly to facilitate certain changes to processes for the registration of intellectual property (“IP”) rights under these Acts, and to standardise certain provisions that are common across these Acts.
The Bill also amends the Intellectual Property Office of Singapore Act to require fines and composition sums paid for offences under the various Acts administered by the Intellectual Property Office of Singapore (“IPOS”), to be paid into the consolidated fund.
Implementation
In his speech at the second reading of the Bill (“Second Reading Speech”), Second Minister for Law Edwin Tong, SC (“Minister”) indicated that the majority of the Bill is expected to be implemented by May 2022. However, the new cooperative mode of examination for plant variety protection applications will be implemented later, after IPOS has finalised the procedural details.
Summary of key changes
Set out below is a summary of the key changes as highlighted by the Minister in the Second Reading Speech:
1. To improve business-friendliness
- Removing the requirement to pay a fee for the publication of the translation of a non-English patent application: This will streamline the administrative process for international patent applications which are not in English, and reduce time, effort and cost for applicants. Currently, for the 15% or so of the international patent applications that enter Singapore which are not in English, certain rights of a patent-holder which are tied to the date when the patent application is published are only conferred if IPOS publishes the English translation of the applications upon payment of a fee.
- Allowing partial acceptance of national trade mark applications: This will help applicants save time and costs. Currently, for national trade mark applications, applicants may apply to protect a trade mark across multiple types of goods and services. If a trade mark examiner has objections to the application in respect of only some of the goods or services listed by the applicant, these objections may hold up the entire application. The Bill amends the Trade Marks Act 1998 to allow IPOS to partially accept an application, allowing the trade mark to be registered for those goods and services for which there were no objections in such cases.
- Introducing an opposition mechanism to facilitate the correction of errors in IP applications or registrations, where the correction may affect the interests of third parties: The Bill will amend the Geographical Indications Act 2014, the Plant Varieties Protection Act 2004, the Registered Designs Act 2000 and the Trade Marks Act 1998 to give IPOS the discretion to publish requests for corrections, so that third parties are made aware of such correction requests, and can assess whether they wish to oppose the corrections. Resolving such disputes between the applicant or rights-holder and third parties before accepting the corrections enhances the certainty of the information on the Registers.
- Changing the post-deadline relief measure for trade mark applications from six months to two months: Trade mark applications are treated as withdrawn if certain deadlines are missed. Currently, applicants can request reinstatement of their applications in the six months after the deadline. Under the Bill, applicants will have two months to request for the continued processing of their lapsed applications, instead of six months to request for reinstatement. The shortened period after the missed deadline would incentivise applicants to quickly put their application in order and also reduce uncertainty for third parties who wish to apply for identical or similar marks.
2. To improve the operational efficiency of IPOS
- Shifting technical and operational provisions from primary to subsidiary legislation: This will allow IPOS to respond more nimbly to changing business needs because amendments to subsidiary legislation can be made more speedily.
- Reducing the turnaround and processing time for patent applications by inviting applicants to make minor amendments within a shorter time period: Currently, if a patent examiner assesses that a patent application does not satisfy one or more of the requirements to be eligible for the grant of a patent, he or she must issue a written opinion setting out the objections. The change under the Bill obviates the need for the patent examiner to issue a written opinion, thereby reducing turnaround and processing times for part of the 5,000 substantive examination requests that IPOS expects to receive annually. With the revisions, if an examiner’s objections can be overcome with minor amendments to the specification of the patent application, examiners can simply invite applicants to make those amendments within a shorter period of time.
- Streamlining the patent examination review process so that patent examiners only need to focus on the latest proposed amendments under some circumstances: Currently, once a patent examiner has issued a report objecting to the grant of a patent, the applicant can request that the examiner’s report be reviewed by filing written submissions and/or amendments to overcome the objections. Another examiner will then review both the original report and the applicant’s responses. However, if the applicant files amendments to overcome all unresolved objections mentioned in the original report, that report is no longer relevant. The Bill provides that if the applicant files such amendments, the original report need not be reviewed and the reviewing examiner can focus on the proposed amendments.
- Introducing a new cooperative mode of examination for applications for the protection of new plant varieties: At present, during the course of examination, IPOS may appoint external experts to conduct the relevant tests and examination or rely on existing examination reports issued by foreign examiners from approved countries. In line with the International Convention for the Protection of New Varieties of Plants, of which Singapore is a party, the Bill will allow for examiners to rely on relevant tests conducted and submitted by the breeder or another person, organisation, or entity acceptable to IPOS.
3. To improve legislative and procedural clarity, and smoothen IPOS’ administration of the IP registration processes
- Clarifying IPOS’ ability to avail patent documents for public access: IPOS had launched the Patents Open Dossier in 2017 to provide easier access to a wider range of patent documents. The Bill clarifies IPOS’ ability to make such documents available to the public, even in the absence of any request for the documents.
- Empowering the Registrar to issue practice directions on the manner of filing of patent applications, and also amending the rules under the Patents Act 1994 to require sequence listings to be filed with patent applications: The Bill will empower the Registrar to issue practice directions on the manner of the filing of patent application, in addition to the manner prescribed in subsidiary legislation. IPOS intends to amend the rules made under the Patents Act 1994 to require sequence listings to be filed with patent applications, where applicable. Under the Bill, the Registrar may issue practice directions setting out the format in which these sequence listings are to be filed. The law currently has no requirement for patent applications to include such sequence listings, even when they might be relevant.
- Clarifying the period that an expired trade mark will continue to be regarded as an “earlier trade mark”: The Bill will amend the Trade Marks Act 1998 to clarify that expired trade marks will be considered “earlier trade marks” for as long as they remain eligible for renewal or restoration.
Background
By way of background, IPOS sought feedback on the draft Bill and corresponding amendments to the respective IP subsidiary legislation from 15 July 2021 to 5 August 2021. There was also an earlier public consultation which IPOS conducted from 17 August 2020 to 14 September 2020 to seek comments on proposed changes to simplify and streamline IP processes, and to improve user experience with digital initiatives.
For more, please read our articles titled “IPOS consults on Intellectual Property (Amendment) Bill 2021 and corresponding amendments to respective IP legislation” and “IPOS conducts public consultation on proposed changes to simplify intellectual property processes and improve user experience with digital initiatives”.
Reference materials
The following materials can be found on the Parliament website www.parliament.gov.sg and the Ministry of Law website www.mlaw.gov.sg:
