28 March 2019
The Ministry of Law (“MinLaw”) is conducting a public consultation to seek feedback on a draft Intellectual Property (Dispute Resolution) Bill (“Bill”) between 11 March 2019 and 5 April 2019.
The Bill seeks to enhance the intellectual property (“IP”) dispute resolution system in Singapore with the following key proposals:
- Grant Singapore High Court exclusive jurisdiction over most civil IP disputes: To simplify the process of IP dispute resolution, the Bill proposes to grant the Singapore High Court exclusive jurisdiction over most civil IP disputes such as infringement of all forms of IP and passing off. Presently, IP disputes are 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.
- Clarify IP disputes can be arbitrated in Singapore: MinLaw proposes to amend the Arbitration Act and International Arbitration Act to clarify the arbitrability of IP disputes in Singapore and to provide certainty that IP disputes can be arbitrated in Singapore. There will be new provisions to clarify that the arbitral award has an effect only on the parties to the arbitration (in personam) and not against the whole world (in rem).
- Formalise third party observation process for patent applications: MinLaw proposes to amend the Patents Act to provide for third party observations. When a patent application has been published, and before an examination report is issued, the Registrar of Patents can consider observations submitted by third parties on the patentability of the invention.
- Introduce a new post-grant patent re-examination process: The Bill seeks to introduce a new provision in the Patents Act to allow a person to request re-examination of a patent after grant, with accompanying reasons and documents. If the Registrar finds that an alleged ground is made out and not resolved by the proprietor of the patent, the patent may be revoked.
The following reference materials are available on the MinLaw website www.mlaw.gov.sg:
- Press release
- Annex A - Public Consultation on Draft Intellectual Property (Dispute Resolution) Bill